Federal court to decide whether USPTO ban on “disparaging” trade marks is unconstitutionalFurther to his previous blog the poster was interested to note that the Federal Circuit recently set aside its
Federal court to decide whether USPTO ban on “disparaging” trade marks is unconstitutional
Further to his previous blog the poster was interested to note that the Federal Circuit recently set aside its own ruling upholding a statutory bar on "disparaging" trademarks — Section 2a of Lanham Act (the legislative text for trade mark law in the U.S) having previously been the death knell for the REDSKINS trade mark registrations — and will now reconsider whether such prohibition violates the First Amendment (which prohibits the making of any law abridging the freedom of speech).
Background
The voiding of its decision to refuse registration of THE SLANTS, the name of an Asian-American rock band who wishes to “take ownership” of the derogatory label to empower fellow Asians, appears to stem from the considered and dissenting opinion of Circuit Judge Kimberly Moore -who concluded that “First Amendment Jurisprudence ….and the protection accorded to commercial speech has evolved considerably” since the thirty five year old case law authority relied upon in Section 2a cases (the McGinley case).
So what does this mean for the Washington Redskins appeal against the cancellation of its REDSKINS trade mark registrations by the USPTO? The NFL team have opted for what amounts to a rehearing by the District Court for the Eastern District of Virginia and the only binding authority for that court will be the US Supreme Court. Nevertheless, the decision of the federal circuit court specialising in trade mark matters will no doubt influence the District Court.
The dissenting views of Judge Moore
As a starting point, Judge Moore rejected the McGinley conclusion that freedom of speech was not abridged by Section 2a because it had no effect on the Applicant's right to use the disparaging mark. She pointed out that "the Supreme Court has repeatedly held that the government cannot deny access to a benefit because of the recipient’s exercise of constitutionally protected speech" and that benefits afforded by a trade mark registration were obvious (not least, in the context of the REDKSINS trade marks, the access to assistance of the US Customs and Border Protection in restricting the importation of counterfeit goods).
Judge Moore took the view that trade marks are protected by commercial speech and because such speech, in the form of disparaging marks, is lawful and not misleading then there is no substantial government interest that can justify Section 2a. In support of this view, Judge Moore pointed out that the government had not presented any substantial government interest to justify the USPTO’s refusal to register disparaging marks and that for any interest to be substantial the general public must believe the Government approves of, rather than merely examines and processes , trade mark registrations. She concluded that such a belief was unlikely because "The purpose served by trademarks, to identify the source of the goods, is antithetical to the notion that the trademark is tied to the government".
The stance of the Department of Justice in the Washington Redskins appeal
Judge Moore's opinion is an interesting counterpoint to that of the Department of Justice, who in its intervening Memorandum in the Washington Redskins appeal, contended that "… a denial of registration is warranted given the government’s substantial interests in, inter alia, … preventing a mistaken perception of official endorsement of insult and calumny."
In terms of Section 2a placing restrictions on private speech as a result of viewpoint discrimination, the DOJ argued that "the Lanham Act’s exclusion of marks that may “disparage” does not discriminate on the basis of viewpoint". Judge Moore, in contrast, believes it is incorrect to suggest that the Lanham Act treats laudatory, descriptive and disparaging marks equally; her reasoning being that laudatory and descriptive marks are eligible for registration once they acquire a secondary meaning, that allows them to identify the Applicant's business, whereas, on the other hand, disparaging marks never become eligible for registration.
Comment
Such reasoning is hard to ignore. In many cases there will be a secondary meaning attaching to the disparaging mark which identifies the business of the Applicant and, arguably, cancels out the original offensive meaning and that fact will always motivate the Applicant to seek the benefits afforded by a trade mark registration. Whether these Applicants will continue to be deprived of such benefits will likely be a matter for the US Supreme Court to adjudicate on.
Further to his previous blog the poster was interested to note that the Federal Circuit recently set aside its own ruling upholding a statutory bar on "disparaging" trademarks — Section 2a of Lanham Act (the legislative text for trade mark law in the U.S) having previously been the death knell for the REDSKINS trade mark registrations — and will now reconsider whether such prohibition violates the First Amendment (which prohibits the making of any law abridging the freedom of speech).
Background
The voiding of its decision to refuse registration of THE SLANTS, the name of an Asian-American rock band who wishes to “take ownership” of the derogatory label to empower fellow Asians, appears to stem from the considered and dissenting opinion of Circuit Judge Kimberly Moore -who concluded that “First Amendment Jurisprudence ….and the protection accorded to commercial speech has evolved considerably” since the thirty five year old case law authority relied upon in Section 2a cases (the McGinley case).
So what does this mean for the Washington Redskins appeal against the cancellation of its REDSKINS trade mark registrations by the USPTO? The NFL team have opted for what amounts to a rehearing by the District Court for the Eastern District of Virginia and the only binding authority for that court will be the US Supreme Court. Nevertheless, the decision of the federal circuit court specialising in trade mark matters will no doubt influence the District Court.
The dissenting views of Judge Moore
As a starting point, Judge Moore rejected the McGinley conclusion that freedom of speech was not abridged by Section 2a because it had no effect on the Applicant's right to use the disparaging mark. She pointed out that "the Supreme Court has repeatedly held that the government cannot deny access to a benefit because of the recipient’s exercise of constitutionally protected speech" and that benefits afforded by a trade mark registration were obvious (not least, in the context of the REDKSINS trade marks, the access to assistance of the US Customs and Border Protection in restricting the importation of counterfeit goods).
Judge Moore took the view that trade marks are protected by commercial speech and because such speech, in the form of disparaging marks, is lawful and not misleading then there is no substantial government interest that can justify Section 2a. In support of this view, Judge Moore pointed out that the government had not presented any substantial government interest to justify the USPTO’s refusal to register disparaging marks and that for any interest to be substantial the general public must believe the Government approves of, rather than merely examines and processes , trade mark registrations. She concluded that such a belief was unlikely because "The purpose served by trademarks, to identify the source of the goods, is antithetical to the notion that the trademark is tied to the government".
The stance of the Department of Justice in the Washington Redskins appeal
Judge Moore's opinion is an interesting counterpoint to that of the Department of Justice, who in its intervening Memorandum in the Washington Redskins appeal, contended that "… a denial of registration is warranted given the government’s substantial interests in, inter alia, … preventing a mistaken perception of official endorsement of insult and calumny."
In terms of Section 2a placing restrictions on private speech as a result of viewpoint discrimination, the DOJ argued that "the Lanham Act’s exclusion of marks that may “disparage” does not discriminate on the basis of viewpoint". Judge Moore, in contrast, believes it is incorrect to suggest that the Lanham Act treats laudatory, descriptive and disparaging marks equally; her reasoning being that laudatory and descriptive marks are eligible for registration once they acquire a secondary meaning, that allows them to identify the Applicant's business, whereas, on the other hand, disparaging marks never become eligible for registration.
Comment
Such reasoning is hard to ignore. In many cases there will be a secondary meaning attaching to the disparaging mark which identifies the business of the Applicant and, arguably, cancels out the original offensive meaning and that fact will always motivate the Applicant to seek the benefits afforded by a trade mark registration. Whether these Applicants will continue to be deprived of such benefits will likely be a matter for the US Supreme Court to adjudicate on.